Wednesday, May 21, 2014

Test Your TTAB Judge-Ability on these Two Design Marks for Keyboards and Computers

Clamcase LLC sought to register the mark shown below left for keyboards, cases for cellular phones, and laptop computers (among other class 9 goods). The PTO refused registration in view of the registered mark shown below right, for the same goods (again among others in class 9). Clamcase appealed, maintaining that its mark resembles a shell while the cited mark looks like a shield. How do you think this came out? In re Clamcase, LLC, Serial No. 85654205 (May 16, 2014) [not precedential].

Of course, when the goods are identical, a lesser degree of similarity is needed between the marks to support a finding of likely confusion. So it boiled down to the marks.

The Board observed that it is not unlikely that consumers may refer to either mark as clam-shaped or shield-shaped. [Really? The one on the right looks like a broken guitar pick - ed.] The relative dimensions are highly similar, and so are the characteristics of both. There was no evidence of third party use of similar marks to show that the cited mark is not inherently strong, or that consumers would notice small distinctions in the marks.

In sum, the Board found the marks to be "quite similar in appearance, commercial impression and connotation, as well as likely to be called-for or referred-to in a similar manner."

The Board also considered a second cited registration, owned by the same registrant, for the following mark for the same overlapping goods. [I don't know why the Board bothered to consider this second mark, since it is more different than the first one - ed.].

The Board then made this seemingly inapt statement: "It has often been said that likelihood of confusion would not be avoided when trade names and house marks are added to otherwise highly similar terms. 'Such addition may actually be an aggravation of the likelihood of confusion as opposed to an aid in distinguishing the marks so as to avoid source confusion.'" [Huh? How apply here?]